When Being Identical Is Not Necessarily Confusingly Similar [1]

In February and May 2018, in two unrelated matters, the SCA was called upon to judge two trade mark matters which, remarkably, had the following issues in common:

both involved an opposition to a pending trade mark application

the opponent’s mark and the opposed mark had an identical prefix – only the suffix differed

both parties applied their marks to the same class of goods; and

the opponent argued that there was a distinct possibility of deception or confusion between the two

And yet: the same court came to diametrically opposite conclusions in the two judgments! How can that possibly be? This article takes a comparative view of the two judgments, and attempts to reconcile the two – if only at a superficial level – it is not intended to be an exhaustive analysis.

The first of these cases to be argued was Dinnermates (Tvl) CC v Piquante Brands International (Pty) Limited & Another [2]. It is convenient to illustrate the key similarities between two cases side-by-side:

The second case was Novartis AG v Cipla Medpro (Pty) Limited & Another [3]. The similarities here were as follows:

[1] Darren S. Margo; Registered Patent Attorney

[2] (401/17) [2018] ZASCA 43

[3] (728/17) [2018] ZASCA 64

In both cases, the respective opponents argued that the prefix was the dominant element of the marks in question and, accordingly, because they were absolutely identical, deception or confusion was bound to follow in the minds of the public when buying the products in question. (Other arguments were also advanced – those are not relevant to this discussion).

In the PEPPA case, the court disagreed with this argument, primarily for the reason that “PEPPA” was held not to be the prominent element: the court accepted that other, older third party trade marks, such as PICKAPEPPA and PEPPAMELT has been permitted to co-exist on the Register. The distinctive element of each mark in in this case was thus the suffix (DEW vs MATES), which were held to be wholly different from each other and, accordingly, the two marks were held not to be confusingly similar.

Conversely, in the CURI case, the same court adopted an entirely different line of reasoning, and arrived at the very opposite conclusion. It was common cause that both the Appellant’s and the Respondent’s goods in question here were scheduled antibiotics, that were capable of being dispensed by a pharmacist only on prescription by a doctor. Simply put – and as was argued by Novartis – the healthcare professionals, with their specialised knowledge, in this highly regulated market, would not be deceived or confused by the different names [4]. The court disagreed, and applied the same reasoning as it did in the 2012 Adcock Ingram judgment, holding that there was, indeed, a real likelihood of both visual and aural confusion amongst members of the public, including trained healthcare professionals.

Are The Judgments Mutually Contradictory?

The question is inescapable. With respect, I suggest that the judgments are not contradictory. In fact, the real difference between the two cases is that, in the PEPPA case, the trade mark applicant was able to adduce evidence of what was the dominant feature of the mark. Conversely, in the CURI case, the Opponent relied on a line of reasoning that had already been dismissed by the same court (and, it must be noted, in the very same industry) previously. One cannot argue successfully that skilled professionals in niche industries are incapable of being confused!

What Lessons Are To Be Learned From These Judgments?

To my mind, there are two: first, a superficial side-by-side comparison is not definitive of the issue. There is no substitute for thought & applied reasoning, and an analysis of which other marks co-exist on the Register – after all: trade mark cases do not exist in a vacuum. Second, the argument that skilled professions in niche industries are incapable of being confused between trade marks, unquestionably, is a non-starter.

[4] Interestingly, the very same argument was attempted before the same court just a few years previously in Adcock Ingram IP (Pty) Limited & Another v Cipla Medpro (Pty) Limited & Another 2012 (4) 238 (SCA)